DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 8, 10-14, and 16-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (WO 2021/133080 A1).
Regarding Claim 1, Kim et al. (WO’080) teach a precursor for forming an yttrium- or scandium-containing thin film, the precursor comprising an yttrium- or scandium-containing compound represented by Chemical Formula 1, wherein in Chemical Formula 1,M is an yttrium (Y) metal; R1 and R3 are each independently a branched-chain alkyl 3 carbon atoms (isopropyl, iPr) [0039], R2 is a straight-chain (ethyl, Et; methyl, Me) alkyl group having 2 carbon atoms (2 carbons), each R' is the same or different and is a straight-chain or branched-chain having 2 to 3 carbon atoms (e.g. propyl, isopropyl, ethyl) and n=1: Examples: bis(n-propylcyclopentadienyl)(diisopropyl-ethyl amidinato)yttrium (nPrCp)2Y(iPr-N-C(Et)=NiPr), bis(isopropylcyclopentadienyl)(diisopropyl-ethyl amidinato)yttrium (iPrCp)2Y(iPr-N-C(Et)=NiPr) (paragraphs 12,46, 93, 109 , 120 of original document; Table 1, paragraph 134; [0052-0053]).
Regarding Claim 2, WO’080 teaches that in Chemical Formula 1, R2 is a straight-chain alkyl group having 2 carbon atoms (ethyl). Id.
Regarding Claims 3 and 8, WO’080 teaches that in Chemical Formula 1, R1 and R3 are each independently a branched-chain alkyl having 3 carbon atoms (isopropyl), and R2 is a straight-chain alkyl group having 2 carbon atoms (ethyl, Et). Id.
Regarding Claim 10, WO’080 teaches that the precursor has a viscosity of 60 cP or less (e.g. 9 cP or less), when precursor comprises both the yttrium complex of Claim 1 and a solvent [0136].
Regarding Claims 11-12, WO’080 teaches that the precursor has a melting point of 30°C (original document, paragraph 0109; [0108=0110]).
Regarding Claim 13, WO’080 teaches that the solvent is one or more of a saturated hydrocarbon having 8 carbon atoms (octane) [0137].
Regarding Claim 14, WO’080 teaches that the solvent is included in an amount range of 16-19 wt% with respect to the total weight of the precursor (Table 2; [0137-0138]).
Regarding Claim 16, WO’080 teaches that a method for forming an yttrium-containing thin film, the method comprising a process of forming a thin film on a substrate using the precursor of claim 1 (Rejection of Claim 1 above; [0073,0140-0141].
Regarding Claim 17, WO’080 teaches the method wherein the process of forming the thin film on the substrate comprises: a process of forming a precursor thin film through deposition of the precursor onto the surface of the substrate; and a process of reacting the precursor thin film with a reactive gas [0140-0141].
Regarding Claim 18, WO’080 teaches the process wherein the process of forming the precursor thin film comprises a process of vaporizing the precursor to transfer the resulting vapor of the precursor into a chamber (CVD, ALD) [0066].
Regarding Claim 19, WO’080 teaches that the deposition is performed by any one process of chemical vapor deposition (CVD), plasma enhanced chemical vapor deposition (PECVD), or atomic layer deposition (ALD) [0071,0077,0136,0140,0066].
Regarding Claim 20, WO’080 teaches wherein the process of forming the thin film on the substrate comprises feeding the precursor onto the substrate and applying a plasma, thereby forming the thin film [0077,0080].
Regarding Claim 21, WO’080 teaches a semiconductor element comprising a scandium- or yttrium-containing thin film manufactured by the method of claim 16 [0112,0142,0145].
Regarding Claim 22, WO’080 teaches a method for forming a scandium- or yttrium-containing thin film, the method comprising a process of forming a thin film on a substrate using the precursor of claim 12 [0020,0136,0140].
Regarding Claim 23, WO’080 teaches wherein the process of forming the thin film on the substrate comprises: a process of forming a precursor thin film through deposition of the precursor onto the surface of the substrate; and a process of reacting the precursor thin film with a reactive gas (Table 2; [0137-0141]).
Regarding Claim 24, WO’080 teaches that the process of forming the precursor thin film comprises a process of vaporizing the precursor to transfer the resulting vapor of the precursor into a chamber. Id.
Regarding Claim 25, WO’080 teaches that the deposition is performed by any one process of chemical vapor deposition (CVD), plasma enhanced chemical vapor deposition (PECVD), or atomic layer deposition (ALD) [0137-0141,0020].
Regarding Claim 26, WO’080 teaches wherein the process of forming the thin film on the substrate comprises feeding the precursor onto the substrate and applying a plasma, thereby forming the thin film [0077,0080].
Regarding Claim 27, WO’080 teaches a semiconductor element comprising a yttrium-containing thin film manufactured by the method of claim 12 (product-by process; process steps not given patentable weight) [0140].
Claim(s) 1-3,8,12-13, and 16-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dussarat et al. (US 2016/0315168).
Regarding Claim 1, Dussarat et al. (US’168) teach a precursor for forming an yttrium- or scandium-containing thin film, the precursor comprising an yttrium- or scandium-containing compound represented by Chemical Formula 1, wherein in Chemical Formula 1,M is an yttrium (Y) or scandium (Sc) metal, R’,R1, R2, and R3 are each independently a straight-chain, or branched-chain alkyl group having 1 to 4 carbon atoms (e.g. methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl) and n is an integer in a range of 1 to 2 (e.g. bis(cyclopentadienyl)(NiPrMe amidinato)scandium, bis(ethylcyclopentadienyl)(NiPrMe amidinato)scandium, bis(methylcyclopentadienyl)(NiPrMe amidinato) yttrium) [0068,0111,0113,0115,0116,0132,0134].
Regarding Claims 2-3, US’168 teach R1 and R3 are each independently a straight-chain or branched-chain alkyl group having 2 to 4 carbon atoms, and R2 is a straight-chain or branched-chain, having 2 to 4 carbon atoms [0111,0116] (e.g. of aminidate ligand with groups Me, Et, nPr, iPr, nBu, and tBu for R,R’, and R”)[0068,0116].
Regarding Claim 8, US’168 teaches that R1 and R3 are both the same and are branched-chain groups having 3 carbon atoms (isopropyl) (e.g. bis(cyclopentadienyl)(NiPrMe amidinato)scandium, bis(ethylcyclopentadienyl)(NiPrMe amidinato)scandium, bis(methylcyclopentadienyl)(NiPrMe amidinato) yttrium) [0132].
Regarding Claims 12-13, US’168 teaches that the precursor includes a solvent (e.g. toluene(unsaturated), ethyl benzene(unsaturated), xylene (unsaturated), mesitylene(unsaturated), decane, dodecane(saturated), octane (saturated), hexane(saturated(saturated)), pentane) [0139].
Regarding Claim 16, US’168 teaches a method for forming a scandium- or yttrium-containing thin film, the method comprising a process of forming a thin film on a substrate using the precursor of claim 1. See rejection of Claim 1 and (Claim 6; [0001]).
Regarding Claim 17, US’168 teaches that the process of forming the thin film on the substrate comprises: a process of forming a precursor thin film through deposition of the precursor onto the surface of the substrate; and a process of reacting the precursor thin film with a reactive gas (cyclic ALD, cyclic CVD) (Claim 14; [0149, 0130]).
Regarding Claims 18-19, US’168 teaches ALD, PEALD,CVD,PECVD [0130].
Regarding Claim 20, US’168 teaches the process of forming the thin film on the substrate comprises feeding the precursor onto the substrate and applying a plasma, thereby forming the thin film [0131,0144].
Regarding Claim 21, US’168 teaches a semiconductor element comprising a scandium-or yttrium-containing thin film on a substrate [0007,0014,0023-0024].
Regarding Claim 22, see citations in the rejection of Claim 12 above.
Regarding Claim 23, see citation in the rejection of Claim 17 above.
Regarding Claims 24-25, see citations in rejections of Claims 18-19 above.
Regarding Claim 26, see citations in rejection of Claim 20 above.
Regarding Claim 27, see citations in rejection of Claim 21 above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4-7, 9, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2021/133080 A1) in view of Schmiege et al. (US 2019/0062916).
Regarding Claims 4, 6-7, and 9, WO’080 teaches isopropyl R-1 and an R3 and ethyl (straight chain) R2. WO’080 fails to teach a methyl R1 and R3. Schmiege (US’916) is analogous art in the field of depositing a bis-amidinate metal precursor, including yttrium and/ or scandium metal and a non-amidinate ligand, including cyclopentadienyl (Claim 20). Additionally, US’916 suggests that R1 and R3 can be independently (H, methyl, ethyl, propyl, isopropyl, butyl, tert-butyl, or trimethylsilyl). Thus, US’916 suggests a range of values of 1-4 carbons in a carbon chain, and methyl falls within that range. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the precursor of WO’080 by substituting a methyl for an isopropyl and/ or for an ethyl by simple substitution, because US’916 suggests that R groups with chains of 1-4 carbons, including methyl,ethyl, and isopropyl are suitable for such a precursor.
Regarding Claim 5, WO’080 teaches an ethyl R2. WO’080 fails to teach an isopropyl R2. Schmiege (US’916) is analogous art in the field of depositing a bis-amidinate metal precursor, including yttrium and/ or scandium metal and a non-amidinate ligand, including cyclopentadienyl (Claim 20). Additionally, US’916 suggests that R1 through R3 can be independently (H, methyl, ethyl, propyl ,isopropyl, butyl, tert-butyl, or trimethylsilyl). Thus, US’916 suggests a range of values of number of carbons in a carbon chain, and isopropyl obviously falls within that range. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the precursor of WO’080 by substituting an isopropyl for an ethyl by simple substitution, because US’916 suggests that R groups with chains of 1-4 carbons, including ethyl and isopropyl are suitable for such a precursor.
Regarding Claim 15, WO’080 teaches a precursor with a structure with R’,R2 = ethane; R1,R3 =
Isopropyl. WO’080 fails to teach a precursor with structure R1,R3 = n-propyl, for example (see structure in Claim 15, Row 11, Column 1). US’916 is analogous art in the field of depositing a bis-amidinate metal precursor, including yttrium and/ or scandium metal and a non-amidinate ligand, including cyclopentadienyl (Claim 20). US’916 suggests that R1 and R3 can be independently (H, methyl, ethyl, propyl, isopropyl, butyl, tert-butyl, or trimethylsilyl). Thus, US’916 suggests a range of values of 1-4 carbons, branched or linear, in a carbon chain, and methyl falls within that range. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the precursor of WO’080 by substituting n-propyl for isopropyl by simple substitution to arrive at a precursor with a structure in Claim 15, because US’916 suggests that R groups with chains of 1-4 carbons, including isopropyl and n-propyl are suitable for such a precursor.
Claim(s) 4-7, 9, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable Dussarat et al. (US 2016/0315168).
Regarding Claim 4,6-7, and 9, US’168 teaches R2 = methyl (straight, i.e. linear, chain of one carbon) (See rejection of Claim 1 above for citations). US’168 fails to teach specifically that R1,R3 = methyl. However, US’168 teaches that each of R’,R1,R2, R3 in a general formula for the claimed precursor can be C1-C5, which overlaps C1 (methyl), and embodiments include species with at least one R, which is a methyl group [0132]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the precursor of US’168 with R1,R3 = methyl (also linear alkyl group with one carbon) through simple substitution of groups, which US’168 suggests are suitable as R groups in these positions for precursors.
Regarding Claim 5, US’168 fails to teach an isopropyl R2. US’168 suggests that R1 through R3 can be independently selected from C1-C5 hydrocarbyl groups, where hydrocarbyl groups are defined as including both linear and branched groups, with specifically suggested methyl, ethyl, n-propyl, isopropyl, n-butyl, and t-butyl [0068,0111,0116]. Thus, US’168 suggests a range of values of number of carbons in a carbon chain, and isopropyl obviously falls within that range with specific embodiments in which iPr is an alkyl group [0132]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the precursor of US’168 by substituting an isopropyl for a methyl by simple substitution, because US’168 suggests that R groups, including what is designated R’ and R1 through R3 in the present claims, can include chains of 1-4 carbons, and suggests that isopropyl is a suitable R group.
Regarding Claim 14, US’168 teaches a concentration of solvent in the range of 0.05 to 2 M [0139]. US’168 fails to teach a range of 1-99 wt% with respect to total weight of precursor. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xie et al. (US 2022/0165575) (X reference: Claim(s) 1,8,16-21, and 27)
Pallem et al. (US 2009/0302434) (X reference: Claim(s) 1, 8, 11-14, 16-22 and 27; Y reference: Claims 4,6-7, and 9)
Ashenhurst, J. “Branching, and Its Affect on Melting and Boiling Points”. Alkanes and Nomenclature. (<<https://www.masterorganicchemistry.com/2010/07/09/branching-melting-boiling-points/>>, last viewed 02 May 2026) (02 November 2022) (evidence of well-known principle in general organic chemistry that branching in alkyl groups affects properties, including melting and vaporization temperatures)
“Viscosity of branched vs. linear short alkanes”. Chemistry. (<<https://chemistry.stackexchange.com/questions/47661/viscosity-of-branched-vs-linear-short-alkanes>>), last viewed 02 May 2026) (9 March 2016) (evidence that a relationship between viscosity and branching in alkanes was known in the prior art at the time of invention)
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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